The application relates to a “Slurry for Treatment of Oxyanion Contamination in Water”
Brief outline of the case
The application was refused and the applicant appealed.
The Board issued a rather negative communication, as it concluded that none of the requests on file appeared to be allowable.
Following receipt of the communication, the applicant withdrew its appeal by a letter from the representative..
OP were cancelled and the order to close the case was sent to the applicant’s representative. Orders to refund outstanding fees were also issued.
The applicant requested a double correction of the declaration of withdrawal under R 139.
The first correction under R 139 had the aim to retract the withdrawal of the appeal, so that the appeal procedure could continue.
The second correction had the aim of requesting the possibility to file a divisional application.
Eventually the correction under R 139 was not allowed.
The decision is interesting as it give a interesting view on the possibility of correction under R 139 of a declaration of withdrawal of an appeal by a qualified representative.
The applicant’s position
It had always been the intention of the applicant to file a divisional application rather than to withdraw the appeal.
Second, in requesting the correction, he had acted without delay. It was only in connection with the Office’s further communications regarding the repayment of fees was the case fully appreciated.
Third, the declaration of withdrawal contained an error: the decision of the examining division was indicated as of 2022, but in fact had been rendered in 2020. That would have made it immediately apparent to third parties that no withdrawal of the appeal could have been intended, as the period for filing an appeal would have barely started had the appealed decision been rendered on 01.12.2022.
Fourth, declarations made in error could be retracted according to § 119 German Civil Code (BGB), which by way of Art 125 should find application in the present circumstances
The client had actually requested withdrawal of the appeal, but also the filing of a divisional application.
It was further argued that G 1/12 point 37 (c) and J 5/19 had held that for R 139 to apply, an error could also consist of an omission. The omission in this case concerned the failure to file a request for a divisional application, as had been the true intention.
Following the board’s decision not to allow a correction of the declaration to withdraw the appeal, reference was made to R 3/22 concerning the order to “reopen proceedings” and the exact meaning thereof.
It was also argued that appeal proceedings would be pending again once a request for correction under R 139 had been made.
The petitioner argued in this regard that this clearly implied the continuation of the previous appeal proceedings.
The board’s position
In terms of terminology and legal meaning, it is important to distinguish between a “retraction” of a declaration of intent and its “rescission“.
Legal effect occurred or not
A retraction of a declaration of intent, including a withdrawal, is possible before the declaration of intent has had any legal effect.
However, a withdrawal made during OP becomes immediately effective.
On the other hand, a declaration can no longer be disregarded if it has already had legal effects, which is the case from the day following the receipt of such declaration. Here, the request to undo such legal effects is considered as a rescission and is subject to certain conditions.
The reason put forward in the latter decision was that the request for correction is inadmissible if received when no such proceedings are pending”, cf. catchword 2.
The narrow interpretation of R 139 in decision T 695/18, points 3.2.8 et seq. was justified by the absence of any time limits or fee requirements to protect legal certainty, which would bring R 139 into conflict with other legal instruments such as petitions for review under Art. 112a(4) EPC or re-establishment of rights under Art. 122.
For the board, G 1/12 should also not be construed narrowly as referring to “admissibly pending appeals”, but broadly as also encompassing appeal cases that would be pending if the correction under R 139 was allowed.
The board held that its position is further confirmed by decision R 3/22, which ordered the reopening of proceedings in case T 695/18 to determine whether the withdrawal of the appeal could be rectified. This decision concluded that the success of a request under R 139 “cannot be ruled out a priori, and if the request is successful, a decision on the merits of the appeal would be possible”.
It follows from these conclusions that a request to correct a declaration of withdrawal of the appeal under R 139 can potentially be successful, which implies that R 139 is applicable.
The different approaches to the question of whether R 139 can be applied to the rescission of a withdrawal of appeal, and also to the way in which R 139 should be applied, appear to reflect the inherent tension between doing justice to an applicant’s individual situation and providing coherence and legal certainty.
The board in this regard was mindful of the fact that procedural requirements, strict as they may seem, are not self-serving rules for the smooth working of patent offices, but serve the public interest in terms of publicity, transparency and legal certainty.
The author of the mistake
For the board, in the present case, the representative made an error by omission, but not an omission concerning the content of the document that was actually filed, but an omission to carry out the client’s instructions.
Invoking § 119 German Civil Code (BGB) for the interpretation of what should be considered an error, could not point to a different definition that would have helped the representative’s case in this regard.
For the board, German law does not appear to apply these rules to procedural declarations, statements made in the course of patent proceedings, as they are not comparable to those made in the course of civil transactions.
Further interesting decisions
In J 5/19 only the represented party’s state of mind matters, and not that of the representative. According to T 2474/19, in cases where the party is represented by a professional representative, the error pursuant to R 139 must be an error of the professional representative in expressing the professional representative’s own intentions.
It is of course true that a representative who mistakenly fails to follow the client’s instructions always acts in error. However, the relevant error must relate to the document actually filed with the EPO, and such an error can only be made by the representative when filling out the document.
In other words, the relevant discrepancy is not the one between the client’s instructions and how they are carried out by the representative, but between what the representative intended to file and what he or she actually filed.
The above considerations exclude errors caused by miscommunication between the client and the representative, or by an incorrect recollection of the client’s instructions, because in such cases the representative would be considered to have filed what he or she intended to file.
Not following applicant’s instructions cannot be regarded as an error under R 139, provided that the document filed with the EPO is deemed to express the representative’s intention at the time of filing.
It was also not immediately apparent that the intention of the representative at the moment of filing the withdrawal was to file a divisional application. In the absence of any proof of the intention to file a divisional, the Board concluded that the intention of the representative at the time of filing the statement was only to withdraw the appeal.
The board further held that a request for correction of a declaration of withdrawal of an appeal under R 139 does not reopen the appeal proceedings, but only starts ancillary proceedings to decide whether the appeal proceedings should be reopened.
The decision is rather hard for the representative, but the key message is the following: not carrying out the instructions of his client cannot be considered as an error under R 139.
This can have dear consequences for the liability of the representative towards its client.
It reminds of a hefty dispute before UK courts between a London firm of representatives and a US subsidiary of a big German chemical firm. The representative did not file an appeal contrary to the client’s instructions.